UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`TENNANT COMPANY,
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`______________________________
`
`Case No. IPR2021-00625
`Patent RE45,415
`______________________________
`
`
`
`PETITIONER’S REPLY
`
`______________________________
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`TABLE OF AUTHORITIES ................................................................................... iii
`TABLE OF EXHIBITS ........................................................................................... iv
`I.
`INTRODUCTION ................................................................................. 1
`
`
`
`
`
`II.
`
`CLAIM CONSTRUCTION .................................................................. 2
`A.
`“Microbubble” and “Nanobubble” ............................................. 2
`B.
`“Flowing Water… Through an Electrolysis Emitter” ................ 3
`C.
`“Water Temperature is a Factor for Formation of the
`Suspension” ................................................................................. 4
`
`B.
`
`C.
`
`III. CLAIMS 13, 14, AND 17-27 ARE UNPATENTABLE ...................... 5
`A. Anticipation by Wikey ................................................................ 5
`i.
`“Flowing Water… Through an Electrolysis
`Emitter” ............................................................................. 5
`“Microbubbles” and “Nanobubbles” ................................ 6
`“Water Temperature is a Factor” (Claim 18) ................. 11
`“Microbubbles and Nanobubbles Supersaturate the
`Water” (Claim 21) .......................................................... 11
`“Substantially Incapable of Breaking the Surface
`Tension of the Water” (Claim 25) .................................. 12
`Obviousness Based on Wikey ................................................... 13
`i.
`AFD ................................................................................ 13
`ii.
`Clark................................................................................ 14
`iii. Wendt, Han, Glembotsky, and Burns ............................. 15
`Anticipation by Davies ............................................................. 16
`i.
`“Critical Distance” .......................................................... 16
`ii.
`Current ............................................................................ 17
`iii.
`“Microbubbles” and “Nanobubbles” .............................. 18
`iv.
`Flow Rate ........................................................................ 20
`v.
`“Water Temperature is a Factor” (Claim 18) ................. 20
`vi.
`Supersaturation (Claim 21) ............................................. 20
`vii. Diameter “Less than 0.0006 Inches” (Claim 22) ........... 21
`viii. “Substantially Incapable of Breaking the Surface
`Tension of the Water” (Claim 25) .................................. 22
`D. Obviousness Based on Davies .................................................. 22
`i.
`Hough ............................................................................. 22
`ii.
`Schoerberl ....................................................................... 23
`
`ii.
`iii.
`iv.
`
`v.
`
`- i -
`
`

`

`iii.
`iv.
`
`Peters ............................................................................... 23
`Treatises .......................................................................... 25
`
`
`
`IV. CONCLUSION ................................................................................... 25
`
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 26
`CERTIFICATE OF SERVICE ................................................................................ 27
`
`
`- ii -
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acoustic Tech., Inc. v. Itron Networked Sols.,
`949 F.3d 1366 (Fed. Cir. 2020) .......................................................................... 23
`Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc.,
`749 F.3d 1349 (Fed. Cir. 2014) ............................................................................ 2
`Honeywell Int’l, Inc. v. Univ. Avionics Sys.,
`493 F.3d 1358 (Fed. Cir. 2007) ............................................................................ 9
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`640 Fed.Appx. 951 (Fed. Cir. 2016) ............................................................. 1, 5, 8
`In re: Ikeda Food Res. Col., Ltd.,
`758 Fed.Appx. 952 (Fed. Cir. 2019) ................................................................... 10
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 25
`Laitram Corp. v. NEC Corp.,
`163 F.3d 1342 (Fed. Cir. 1998) ............................................................................ 4
`Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 23
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 3
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (Fed. Cir. 2019) .......................................................................... 15
`Schering Corp. v. Geneva Pharm., Inc.,
`339 F.3d 1373 (Fed. Cir. 2003) .......................................................................... 19
`
`
`
`
`- iii -
`
`

`

`TABLE OF EXHIBITS
`
`Exhibit # Reference Name
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`1114
`
`1115
`
`1116
`
`1117
`
`1118
`
`U.S. Patent No. RE 45,415 to Senkiw
`
`File History of U.S. Patent No. RE 45,415
`
`Declaration of Dr. Mario Tremblay Regarding the ʼ415 patent
`
`Curriculum Vitae of Dr. Mario Tremblay
`
`U.S. Patent No. 4,917,782 to Davies
`
`U.S. Patent No. 4,039,439 to Clark
`
`U.S. Patent No. 5,324,398 to Erickson
`
`U.S. Patent No. 5,439,576 to Schoeberl
`
`U.S. Patent No. 3,984,303 to Peters
`
`U.S. Patent No. 5,049,252 to Murrell
`
`U.S. Patent No. 6,296,756 to Hough
`
`U.S. Patent No. 3,891,535 to Wikey
`
`Declaration of Janelle Beitz
`
`Aquariums for Dummies
`Information showing that first IDG Books Worldwide, now Wiley,
`is a well-known commercial publisher of the popular “For
`Dummies” book series
`Reviews of AFD from 2002 and earlier downloaded from
`Amazon.com.
`Wendt, H. and Kreysa, G. (1999), Electrochemical Engineering:
`Science and Technology in Chemical and Other Industries,
`Springer-Verlag Berlin Heidelberg (hardcover)
`Response from the British Library regarding public availability
`request for Wendt
`
`- iv -
`
`

`

`Exhibit # Reference Name
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`
`1127
`
`1128
`
`1129
`
`1130
`
`1131
`
`1132
`
`ISBN Search Results regarding a publication date for Wendt
`Zhimin Qiang, et al., Electrochemical Generation of Hydrogen
`Peroxide from Dissolved Oxygen in Acidic Solutions, 36 Water
`Rsch. 85 (2002)
`L.J.J. Janssen & L. Koene, The Role of Electrochemistry and
`Electrochemical Technology in Environmental Protection, 85 Chem.
`Eng’g J. 137 (2002)
`Massimiliano Bestetti, et al., Zinc Electrowinning with Gas
`Diffusion Anodes: State of the Art and Future Developments, 40
`Canadian Metallurgical Q. 459 (2001)
`Glembotsky, V.A., Mamakov, A.A., Sorokina, V.N. (1973), Size of
`gas bubbles forming during electroflotation. Elektronnaya
`Obrabotka Materialov 5, 66–68. 1973 (published in Russian)
`
`Certified English Translation of Glembotsky
`
`Front matter information for Glembotsky
`Response from the British Library regarding public availability of
`Glembotsky
`
`Copy of cover page for Glembotsky
`Klaus Müller, Electroflotation from the Double Layer to Troubled
`Waters, in Electrochemistry in Transition 21 (J. Murphy et al., eds.,
`1992)
`S. Venkatachalam, Electrogenerated Gas Bubbles in Flotation, 8 M.
`Processing and Extractive Metallurgy R. 47 (1992)
`J.P.F. Koren & U. Syversen, State-of-the-art Electroflocculation, 32
`Filtration & Separation 153
`Burns, S.E., Yiacoumi, S. and Tsouris, C. (1997), Application of
`Digital Image Analysis for Size Distribution Measurement of
`Microbubbles, Imaging Technologies: Techniques and Civil
`Engineering Applications Engineering Foundation, Davos,
`Switzerland, May 25-30, 1997
`Search results of United States Department of Energy Office of
`Scientific and Technical Information records regarding publication
`date for Burns
`
`- v -
`
`

`

`1133
`
`1134
`
`Exhibit # Reference Name
`Cover page, table of contents and Burns article from Davos,
`Switzerland conference on May 25-30, 1997
`S.E. Burns, et al., Digital Image Analysis to Assess Microbubble
`Behavior in Porous Media, 13 J. Comput. Civ. Eng. 43 (1999). The
`article indicates that it appeared in a periodic journal published in
`January 1999
`M. Zhang & S.E. Burns, Surfactant Effects on the Transport of Air
`Bubbles in Porous Media, in Environmental Geotechnics,
`Proceedings of Sessions of GEO-Denver 2000 121 (T.F. Zimmie,
`ed., 2000)
`Front matter information from Environmental Geotechnics,
`Proceedings of Sessions of GEO-Denver 2000 regarding M. Zhang
`& S.E. Burns
`Han, M.Y., Park, Y.H., and Yu, T.J. (2002), Development of a New
`Method of Measuring Bubble Size, Water Science and Technology:
`Water Supply Vol 2 No 2 pp 77–83
`
`1135
`
`1136
`
`1137
`
`1138
`
`1139
`
`1140
`
`1141
`
`1142
`
`1143
`
`1144
`
`1145
`
`1146
`
`1147
`
`Declaration of Rachel J. Watters
`OWT’s Complaint in in Case No. 0:20-cv-00358-ECT-HB in the
`U.S. District Court for the District of Minnesota
`Tennant’s Waiver of Service of OWT’s Complaint in Case No.
`0:20-cv-00358-ECT-HB in the U.S. District Court for the District of
`Minnesota
`
`U.S. Patent No. 6,171,469 to Hough
`OWT’s Proposed Claim Constructions in Case No. 0:20-cv-00358-
`ECT-HB in the U.S. District Court for the District of Minnesota
`Tennant’s Proposed Claim Constructions in Case No. 0:20-cv-
`00358-ECT-HB in the U.S. District Court for the District of
`Minnesota
`
`Declaration of Sheila Hatchell
`
`U.S. Patent Publication No. 20030042134 to Tremblay
`
`Scheduling Order from District Court with Subsequent Amendments
`Transcript of the Deposition of Ralph E. White, Ph.D., dated
`February 9, 2022
`
`- vi -
`
`

`

`Exhibit # Reference Name
`
`1148
`
`Email from Nate D Louwagie, dated August 25, 2021
`
`- vii -
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`

`

`I.
`
`INTRODUCTION
`The prior art teaches electrolysis devices with the electrode spacing, voltage,
`
`and current limits claimed in the ’415 patent. According to the patent, these
`
`“special dimensions” inherently cause small oxygen bubbles that the patent defines
`
`as “microbubbles” and “nanobubbles.” Petitioner’s expert recreated the devices
`
`disclosed by the prior art and tested them. Bubbles that meet the patent’s
`
`definitions of “microbubbles” and “nanobubbles” resulted.
`
`The Petition made a prima facie case for inherency, which the Board’s
`
`Institution Decision (“I.D.”) confirmed. At that point, the burden shifted to Patent
`
`Owner (“PO”) to prove that the creation of “microbubbles” and “nanobubbles” was
`
`not inherent in the prior art. Howmedica Osteonics Corp. v. Zimmer, Inc., 640
`
`Fed.Appx. 951, 957 (Fed. Cir. 2016). PO failed to do so. PO’s expert performed
`
`no testing of his own. Ex.1147, 16:9-12. Instead, PO reiterates arguments the
`
`Board already rejected and relies on its expert’s speculation that modifying the
`
`parameters of the reconstructions might have created bubbles of different sizes – or
`
`rendered the devices inoperative for performing any electrolysis at all.
`
`Because PO failed to introduce evidence rebutting Petitioner’s prima facie
`
`case, the Board need not even reach the other grounds in the Petition to find
`
`challenged claims 13-14, 17-23, and 25 invalid. Challenged claims 24 and 26-27
`
`relate to minor modifications of the electrode configuration, which are shown in
`
`- 1 -
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`

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`multiple prior art references describing the electrolysis of water. Substituting one
`
`known electrode configuration for another that performs the same function is an
`
`obvious substitution of one known option for another – a design choice with
`
`predictable results. Accordingly, the Board should cancel challenged claims 13-14
`
`and 17-27.
`
`II. CLAIM CONSTRUCTION
`A.
` “Microbubble” and “Nanobubble”
`The ʼ415 patent defines “microbubble” and “nanobubble” as follows:
`
`“Microbubble” means a bubble with a diameter less than 50 microns.
`
`“Nanobubble” means a bubble with a diameter less than that
`
`necessary to break the surface tension of the water. Nanobubbles
`
`remain suspended in the water, giving the water an opalescent or
`
`milky appearance.
`
`Ex. 1101, 4:10-15. PO argues that the Board should adopt the district court’s claim
`
`construction and ignore the second sentence of the express definition of
`
`“nanobubble” as “not definitional.” Resp. 11. PO does not attempt to justify
`
`modifying the patent’s express definition, which is contrary to Federal Circuit law.
`
`See Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc., 749 F.3d 1349, 1355-56 (Fed. Cir.
`
`2014). Regardless, as noted in the Petition, the prior art inherently discloses the
`
`claimed “nanobubbles” under either definition. Pet. 18 n.1. Significantly for this
`
`- 2 -
`
`

`

`IPR, the patent’s definition of “microbubble” has a numerical bound but the
`
`definition of “nanobubble” does not.
`
`B.
`“Flowing Water… Through an Electrolysis Emitter”
`PO asks the Board to adopt the district court’s construction of the phrase
`
`“flowing water… through an electrolysis emitter” as “moving water through an
`
`electrolysis emitter by means other than electrolysis.” Resp. 6. There is no
`
`limitation in the claim language on what does – or does not – cause water to
`
`“flow.” The patent specification does not include any special definition of
`
`“flowing water” in its list of defined terms. See Ex. 1101, 3:64-4:26. To the
`
`contrary, the patent specification describes a “flow-through model” that “may be
`
`connected in-line to a watering hose[.]” Id. 3:25-26. The specification does not
`
`address the mechanism that causes the water in the hose to flow, because the
`
`source of the water flow is irrelevant to the alleged invention.
`
`By its own admission, PO added “by means other than electrolysis” to the
`
`plain meaning of the phrase “flowing water” to distinguish Wikey. Ex. 2129, 34-
`
`35. The appropriate bases for claim construction are the claims themselves, the
`
`patent specification, the prosecution file history, and, where appropriate,
`
`dictionaries and treatises. Phillips v. AWH Corp., 415 F.3d 1303, 1316-19 (Fed.
`
`Cir. 2005). Uncited prior art is not on the list.
`
`- 3 -
`
`

`

`The district court’s construction is wrong. The district court relied on the
`
`fact that “flow” is an “active verb” to conclude that the patent “suggests that the
`
`motion of water is independent of the application of electrical current” and
`
`“seem[s] to contemplate that the water is already moving by the time the electrical
`
`current starts.” Resp. 7. The district court’s reasoning that the active verb “flow”
`
`implies a source of flow other than electrolysis contradicts the record. Nothing in
`
`claim 13 requires a particular timing sequence for commencing water flow and
`
`commencing electrical current. The district court’s conclusion about what the
`
`patent “seems to contemplate” improperly imports a limitation into the claims.
`
`Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998).
`
`The Board gives the district court’s construction “appropriate weight,” in
`
`light of the patent claims, specification and prosecution history. Consol. Trial
`
`Prac. Guide, Nov. 2019, 47 & 49. Here, the Board should give “flowing water” its
`
`plain and ordinary meaning.
`
`C.
`
`“Water Temperature is a Factor for Formation of the
`Suspension”
`PO asks the Board to adopt the district court’s construction of “water
`
`temperature is a factor for formation of the suspension” as meaning “the method
`
`uses water temperature as a factor in forming the suspension,” citing case law that
`
`“[i]t is axiomatic that claims are construed the same way for both validity and
`
`infringement.” Resp. 11-12 (citing Amgen Inc. v. Hoechst Marion Roussel, 314
`
`- 4 -
`
`

`

`F.3d 1313, 1330 (Fed. Cir. 2003)). For infringement, PO argues the district court’s
`
`construction does not require measuring or analyzing water temperature. Ex. 1148.
`
`III. CLAIMS 13, 14, AND 17-27 ARE UNPATENTABLE
`A. Anticipation by Wikey
`The I.D. found that Petitioner demonstrated a reasonable likelihood of
`
`prevailing on Ground 1. I.D. 25-26. Petitioner thus met its prima facia burden of
`
`demonstrating inherent anticipation, and the burden shifted to PO to present
`
`evidence that anticipation is not inherent. Howmedica, 640 Fed.Appx. at 960
`
`(holding that the Board “correctly applied the burden-shifting framework”). PO
`
`has failed to do so. Ex.1147, 16:9-12. Instead, PO attempts to rely on the district
`
`court’s erroneous construction of “flowing water” and the same criticisms of
`
`Petitioner’s evidence the Board already rejected. Resp. 18-30. PO’s expert simply
`
`speculates that altering the parameters of Petitioner’s recreated Wikey device could
`
`change the bubble size. PO has not met its burden of rebutting Petitioner’s prima
`
`facie case of inherent anticipation.
`
`i.
`“Flowing Water… Through an Electrolysis Emitter”
`PO’s argument that Wikey does not teach “flowing water… through an
`
`electrolysis emitter” is based entirely on the district court’s erroneous claim
`
`construction, which improperly excluded water flow resulting from electrolysis.
`
`Resp. 18-19. That construction reads an implicit negative limitation from the
`
`preferred embodiments into the claims for the sole purpose of distinguishing
`
`- 5 -
`
`

`

`Wikey. Wikey expressly states, “[t]he water that flows through the three tubes is
`
`forced therethrough by the electrolysis action and because of the electrolysis action
`
`contains a plethora of oxygen bubbles.” Ex. 1112, 3:18-21 (emphasis added).
`
`Figure 3 illustrates that water flowing through tube 41 flows though electrolysis
`
`unit 13:
`
`
`
`Thus, applying the plain English meaning of the phrase “flowing water”
`
`Wikey teaches this limitation.
`
`ii.
`“Microbubbles” and “Nanobubbles”
`Petitioner met its prima facie burden of showing that Wikey inherently
`
`created the claimed “microbubbles” and “nanobubbles.” I.D. 22-25. PO and its
`
`expert rehash the same arguments the Board already rejected. PO Resp. 20-30.
`
`Those arguments fail for the reasons already noted by the Board.
`
`- 6 -
`
`

`

`First, PO disputes that the ʼ415 patent asserts that “microbubbles” and
`
`“nanobubbles” are the inherent result of the claimed “critical distance” between the
`
`electrodes. Resp. 20-22. Claim 13 specifies voltage, current, and flow rate limits
`
`that – combined with the “critical distance” – create “microbubbles” and
`
`“nanobubbles.”
`
`Wikey teaches values for each of these variables falling within the claimed
`
`ranges. I.D. 24-25. Claim 18 specifies that “microbubbles” and “nanobubbles”
`
`will form in “ambient” temperature water, as reflected by the patent’s use of the
`
`alleged invention “in an aquarium or bait bucket.” Ex. 1101, 5:25. Wikey
`
`likewise describes a device for use in unheated aquariums. Ex. 1112, 1:3-22. The
`
`claims do not require any particular viscosity of the water, and PO’s expert
`
`admitted that liquid viscosity of water is “well-known,” and would be “about the
`
`same for pond and tap water.” Ex. 1147, 88:20-89:6. Thus, according to the ’415
`
`patent, the spacing of the Wikey electrodes will inherently result in the formation
`
`of “microbubbles” and “nanobubbles” based on the voltage, current, and flow rate
`
`of Wikey.
`
`Wikey teaches creating small bubbles of oxygen that do not break the
`
`surface tension of the water – what the ’415 defines as “nanobubbles.” Ex. 1112,
`
`2:49-5, 13:21-27 (noting “water containing the oxygen bubbles passes back down
`
`- 7 -
`
`

`

`through the tube 47” thus not breaking the surface tension). PO’s expert admitted
`
`that Wikey produces “microbubbles.” Ex. 1147, 201:2-14.
`
`PO’s second argument criticizes Petitioner for not using modern equipment
`
`able to “detect particles smaller than 5 microns[.]” Resp. 23. Petitioner’s testing
`
`of Wikey confirms the inherent creation of “microbubbles” and “nanobubbles”
`
`using the same testing and evidence PO presented in the specification to support
`
`the claims. The ʼ415 patent describes measuring bubble size using a “black and
`
`white digital, high contrast, backlit photograph of treated water.” Ex. 1101, 5:50-
`
`52. The smallest bubble measurable by that method was “4.7… microns.”
`
`“[S]maller bubbles in the nanometer range could not be resolved” using the testing
`
`method described in the specification. Id. 5:62-64. Using the method taught in the
`
`’415 patent is appropriate. Howmedica, 640 Fed.Appx. at 959. PO offered no
`
`evidence that a different method would yield a different result, as was its burden.
`
`Id. Notably, the patent’s express definition of “nanobubbles” does not put a
`
`specific size limit on the bubbles, unlike the definition of “microbubbles.” Ex.
`
`1101, 4:10-15.
`
`PO argues that the presence of increased dissolved oxygen does not establish
`
`the existence of “nanobubbles.” Resp. 25-26. That argument contradicts the
`
`specification, which relies on increased dissolved oxygen levels as a proxy to
`
`prove the creation of “nanobubbles.” For example, Table III relies on the
`
`- 8 -
`
`

`

`dissolved oxygen (“DO”) content of the treated water to prove that the alleged
`
`invention is creating nanobubbles:
`
`
`
`Ex. 1101, 9:38-50. The table’s footnote states that the apparatus causes “water [to]
`
`become[] milky, indicating supersaturation.” Id. The “Definitions” section of the
`
`patent states that “Nanobubbles remain suspended in the water, giving the water an
`
`opalescent or milky appearance.” Id. 4:14-15. The definition of “supersaturation”
`
`is “oxygen at a higher concentration than normal calculated oxygen solubility at a
`
`particular temperature and pressure.” Id. 4:16-18. The patent’s lexicography thus
`
`equates “milkiness” with both nanobubbles and supersaturation, which it defines as
`
`a dissolved oxygen content greater than 100%.
`
`PO’s argument that dissolved oxygen is different from “nanobubbles” is in
`
`effect an argument that the specification is incorrect. That may create significant
`
`enablement and written description problems, but for the purposes of evaluating
`
`the prior art, the patentee’s lexicography governs. Honeywell Int’l, Inc. v. Univ.
`
`- 9 -
`
`

`

`Avionics Sys., 493 F.3d 1358, 1361 (Fed. Cir. 2007). Having equated
`
`“nanobubbles” with increased dissolved oxygen to obtain the patent, PO cannot
`
`argue that the same evidence is insufficient to prove the creation of the claimed
`
`“nanobubbles” by the prior art.
`
`PO’s third argument is that Wikey’s Figure 3 illustrates electrode plates
`
`“oriented horizontally,” but Petitioner tested Wikey with plates oriented vertically.
`
`PO speculates that rotating the electrodes could cause the “microbubbles” and
`
`“nanobubbles” to coalesce into larger bubbles. Resp. 27-28. Mere speculation
`
`cannot rebut Petitioner’s prima facie showing that the bubbles produced by the
`
`Wikey device inherently include “microbubbles” and “nanobubbles.” In re: Ikeda
`
`Food Res. Col., Ltd., 758 Fed.Appx. 952, 957-59 (Fed. Cir. 2019). Furthermore,
`
`Wikey states that the depiction of “electrode unit 13” in Figures 2 and 3 “is
`
`schematic[.]” Ex. 1112, 2:63-64. A POSITA would not expect a “schematic”
`
`illustration to require a particular orientation.
`
`PO’s fourth argument is that the electrodes were too large, resulting in an
`
`increased current (which was still within claim 13’s limits). Resp. 28-29. The I.D.
`
`rejected these criticisms, finding that Wikey “supports Petitioner’s use of ‘8
`
`circular electrode plates having a 2-inch diameter’ in its reconstructed apparatus.”
`
`I.D. 25. PO’s expert did not perform any testing to determine whether reducing
`
`electrode size would impact bubble size. Ex. 1147, 113:1, 131:1, 142:3-6. He
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`- 10 -
`
`

`

`likewise did nothing to determine whether alternative electrode sizes were readily
`
`available. Id., 152:22-153:20. PO’s criticism based on the relative electrode size
`
`illustrated in Wikey’s figures is particularly inappropriate in light of Wikey’s
`
`express statement that “[t]he showing [of electrode unit 13], of course, is
`
`schematic, and the plates of the unit are in actuality more closely packed together
`
`to be within the dimensions set forth in the description of the plates of FIG. 1.”
`
`Ex. 1112, 2:63-67.
`
`iii.
`“Water Temperature is a Factor” (Claim 18)
`Claim 18 adds the limitation that “the water has a temperature no greater
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`than about ambient temperature at the inlet and the water temperature is a factor
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`for formation of the suspension.” PO argues that Wikey does not meet the district
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`court’s claim construction, despite arguing that the construction does not require
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`measuring water temperature. Resp. 12, 30; Ex. 1148. Wikey uses the “ambient
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`temperature” of the water the same way the ʼ415 patent does – it performs
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`electrolysis in unheated water that has fish swimming in it. See Ex. 1112, 1:3-22.
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`iv.
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`“Microbubbles and Nanobubbles Supersaturate the Water”
`(Claim 21)
`The ʼ415 patent defines “supersaturated” as “oxygen at a higher
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`concentration than normal calculated oxygen solubility at a particular temperature
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`and pressure.” Ex. 1101, 4:16-18. PO argues that (a) producing “microbubbles”
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`and “nanobubbles” does not mean Wikey produces enough of them, and (b)
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`dissolved oxygen above 100% is not evidence of “supersaturation.” Resp. 31-32.
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`Those arguments are illogical. The ʼ415 specification defines “supersaturation” as
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`more than 100% dissolved oxygen, and Table III measures the dissolved oxygen
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`content as evidence of both nanobubbles and supersaturation. Ex. 1101, 4:16-18,
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`9:38-50. Likewise, because the patent teaches that the claimed “microbubbles”
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`and “nanobubbles” remain in suspension for long periods of time, it is inherent that
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`continuing to run the Wikey apparatus will result in a sufficient accumulation of
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`bubbles to “supersaturate” the water. Ex. 1101, Abstract, 4:27-38; Ex. 1103, ¶ 35.
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`v.
`
`“Substantially Incapable of Breaking the Surface Tension of
`the Water” (Claim 25)
`PO argues that Wikey’s bubbles break the surface tension of water. This
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`contradicts the clear teaching of Wikey. Ex. 1112, 2:49-5, 13:21-27 (noting “water
`
`containing the oxygen bubbles passes back down through the tube 47[,]” which
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`means the bubbles do not break the surface tension and leave the water). In the
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`ʼ415 specification and prosecution, PO asserted that this is an inherent attribute of
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`bubbles in the claimed “microbubble” and “nanobubble” range. Ex. 1101, 4:27-
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`41; Ex. 1102, 198. PO cannot dispute the factual assertions made to obtain the
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`patent. Furthermore, this claim limitation is at best a bald assertion of the alleged
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`natural law and entitled to no patentable weight.
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`B. Obviousness Based on Wikey
`i.
`AFD
`PO wrongly contends that the Petition “does not suggest AFD could
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`motivate a POSA to add a pump or any other means to create flow outside of the
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`flow already created by Wikey’s electrolysis module.” Resp. 55. Not true. Dr.
`
`Tremblay explained that a POSITA would have been motivated to combine Wikey
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`and AFD because they address the same field, and because AFD “teaches the use
`
`of a filtration system to help aerate the water by producing flow and bubbles.” Ex.
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`1103, ¶182. AFD teaches that filtration “produces water flow and bubbles,” and
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`that mechanical filtration systems remove waste from the water “by passing it over
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`materials.” Ex. 1114, 22. AFD also teaches use of an “air pump.” Id. 21.
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`Similarly, Wikey teaches that electrolysis results in a “pumping action.” Ex. 1112,
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`3:13-15.
`
`A POSITA would have been motivated to add the filter or pump taught by
`
`AFD to Wikey and would have reasonably expected increased oxygen, water flow,
`
`and filtration. Ex. 1103, ¶182. PO argues that a POSITA would have lacked
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`motivation to apply the teachings of AFD to Wikey because a benefit of Wikey is
`
`removing noisy, inefficient pumps. Resp. 55. On the contrary, a POSITA would
`
`have understood that combining a pump or filter with Wikey would yield
`
`additional water flow and filtration. AFD suggests combining filtration and
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`treatment systems to accomplish the desired mechanical, biological, and chemical
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`filtration. Ex. 1103, ¶70-71; Ex. 1114, 11, 54. Combining the Wikey emitter with
`
`a conventional pump or mechanical filter of AFD to boost and regulate flow would
`
`allow a smaller pump, which would be quieter, more efficient, and ensure the
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`desired aeration/filtration. Ex. 1103, ¶70-71; Ex. 1114, 11, 54. Accordingly, the
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`combination of Wikey and AFD uses Wikey for its intended purpose and goals,
`
`demonstrating a clear expectation of success.
`
`ii.
`Clark
`Wikey and Clark are more than just analogous art. Both teach an
`
`
`
`electrolysis apparatus to address similar problems. Pet. 33-34, 44; Ex. 1103, ¶¶36,
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`73, 184-186; Ex. 1106, Abstract, 2:61-3:11; Ex. 1112, Abstract, 1:23-3:39. Both
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`teach that electrolysis aerates water and increases oxygen levels, improving water
`
`and supporting fish. Pet. 19-20, 34, 39-40; Ex. 1103, ¶¶36, 73, 182-186; Ex. 1112,
`
`Abstract, 1:23-3:39. Wikey teaches that, like natural bodies of water, fish tanks are
`
`subject to pollution, bacteria, and insufficient oxygen. Ex. 1112, 1:10-15. Clark
`
`teaches that waste in bodies of water increases bacteria and depletes oxygen. Ex.
`
`1106, 1:60-65. PO’s expert admitted a POSITA would have found it helpful to
`
`look to the teachings of Wikey and Clark in combination to understand how to
`
`deliver increased oxygen to fish. Ex. 1147, 168:9-170:21.
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`
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`PO argues that Clark’s electrode configuration is inapplicable to Wikey’s
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`system. Resp. 58. Not true. Wikey’s electrolysis unit is housed in a vertical tube,
`
`with water flowing up the tube through the emitter. Ex. 1112, 3:10-18. Similarly,
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`Clark’s emitter is in a vertical tubular collar, with water flowing upward through
`
`the column and emitter. Ex. 1106, Figs. 5-6, 9:8-20. Given their similar
`
`configurations for solving similar problems, a POSITA would have been motivated
`
`to replace Wikey’s flat electrodes with Clark’s electrode arrangement, which Clark
`
`teaches creates smaller, more uniform bubbles. Ex. 1103, ¶¶73-76, 184; Ex. 1106,
`
`8:58-63. Clark teaches these electrodes cause bubbles to rise uniformly in a
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`vertical path – without colliding – which Clark identifies as an improvement over
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`erratic bubble formation with flat plate electrodes. Id. A POSITA would have
`
`been motivated to follow Clark’s teaching and replace Wikey’s electrode
`
`configuration with Clark’s to obtain the benefits of those electrodes, with a
`
`reasonable expectation of success. Id.
`
`iii. Wendt, Han, Glembotsky, and Burns
`Wendt, Han, Glembotsky and Burns (“the Treatises”) are textbooks and
`
`
`
`other well-known resources reflecting the general knowledge and understanding of
`
`a POSITA. They are cited to show how a POSITA would have understood Wikey.
`
`Ex. 1103, ¶¶170-181, 191, 206; Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373
`
`(Fed. Cir. 2019). The Treatises show that a POSITA would have understood that
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`water electrolysis systems produce “microbubbles” and “nanobubbles” smaller
`
`than 50 microns. Pet. 40-43; Ex. 1103, ¶¶170-183, 191, 206.
`
`
`
`Wikey teaches producing a “plethora of oxygen bubbles” that are “extremely
`
`small.” Ex. 1112, 2:49-51, 3:18-21. The Treatises show that it would have been
`
`obvious to use Wikey’s apparatus to produce the claimed “microbubbles” and
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`“nanobubbles” because it was well-known that water electrolysis produces such
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`bubbles. Ex. 1103, ¶183.
`
`C. Anticipation by Davies
`As with Wikey, the I.D. found Petitioner demonstrated a reasonable
`
`likelihood of prevailing that Davies inherently anticipates claims 13-14, 17-23, and
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`25, shifting the burden to PO. I.D. 35-36. Once again, PO failed to perform any
`
`testing of its own and simply reargues criticisms the Board already rejected. Resp.
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`32-52; Ex. 1147, 16:9-1